itDRP on bulgarireplica.it: brief focus on the word “replica”

Bulgari SpA was notified that the domain bulgarireplica.it, registered by an Italian national, was used to refer to a website where visitors could purchase identical copies of jewelry creations. 

It must be admitted that the legal qualification of “counterfeit” does not apply to all “replicas”. However, experience has shown that using the word “replica” in the digital environment is less intended for aesthetes passionate about jewelry, watchmaking, or leather goods than consumers searching for counterfeit goods. In this regard, data from Google Trends indicates that searches for the word “replica” are steadily declining.

Source : Google Trends – Recherche sur le mot “replica” entre le 20 juin 2011 et le 20 juin 2021 – Interest over time

Source : Google Trends – Search on the word “replica” between 20 June 2011 and 20 June 2021 – Interest over time

Nevertheless, it is too early for brand owners to lower their guard given that searches for the word “replica” remain frequently associated with specifc products (watches, bags) or luxury brands (Louis Vuitton, Rolex, Gucci).

Source : Google Trends – Recherche sur le mot “replica” entre le 20 juin 2011 et le 20 juin 2021 – Related topics and queries

Source : Google Trends – Search on the word “replica” between 20 June 2011 and 20 June 2021 – Related topics and queries

These data also reveal Italian Internet users’ strong interest in the word “replica” since they are placed in the second position behind Romanian Internet users. Hence, it is crucial for Bulgari to monitor the use of its brand in the digital space and initiate legal proceedings to put an end to any form of illegal use.

Source : Google Trends – Recherche sur le mot “replica” entre le 20 juin 2011 et le 20 juin 2021 – Interest by Region

Source : Google Trends – Search on the word “replica” between 20 June 2011 and 20 June 2021 – Interest by Region

Finally, composing a domain name reproducing a trademark appended to words such as “replica” or “fake” remains frequent. Case law provides numerous examples that are not sufficient to express the extent of the phenomenon on their own.

CaseDomain nameUse
WIPO, D2010-2266, Hermes International v. tangyi, February 19, 2011replica-hermess.com, replicashermes.comParking / Pay per click
WIPO, D2012-1168, Goyard St-Honoré v. Kim Yong, August 8, 2012goyard-wallet.comSale of goods
WIPO, D2007-1544, Chopard International S.A. v. Vladimit Kozlov, December 10, 2007chopardreplicawatch.comSale of goods
WIPO, D2014-1166, Goyard St-Honoré v. Alice Chan, August 16, 2014goyardreplicasale.net, goyardreplicaus.comSale of goods
WIPO, D2013-1753, Goyard St-Honoré v. Alice Chan, December 3, 2013goyardreplicauk.comSale of goods
WIPO, D2019-2618, Breitling SA v. Evans Malcolm, Malcolm Evans, December 6, 2019breitlingwatches.bizSale of goods
WIPO, D2016-0730, Turlen Holding SA v. San Lintun, June 6, 2016richardmillereplica.comSale of goods
WIPO, D2014-0688, Richemont International SA. v. Janice Liburs, June 27, 2014replicapiaget.comSale of goods
WIPO, D2010-1743, Hermes International, SCA v. cui zhenhua, December 13, 2010hermes-handbag.comSale of goods
WIPO, D2010-2265, Hermes International v. VISA WEN, February 22, 2011replicahandbagshermes.comSale of goods
WIPO, D2013-0487, Goyard St-Honoré v. Laoda Corp, Wang Shan, April 30, 2013goyardreplicabags.net, goyardreplicabags.org, replicagoyard.org, replicagoyardtote.com, shopgoyardreplica.comSale of goods
WIPO, D2015-0404, Cartier International A.G. v. Chong James, buysellkey, April 21, 2015cartier-replica.comPassive holding
WIPO, D2015-0212, Vertu Corporation Limited v. Alexander Misior, Luxov Media Company, April 20, 2015vertu-replica.comSale of goods
WIPO, D2004-0871, Tag Heuer S.A. v. JBlumers Inc./Jerald Blume, December 9, 2004faketagheuer.com, replicatagheuer.com, tagheuerreplicas.comSale of goods

As the examples taken from case law show, it is not uncommon for the domain name in dispute to be used to sell goods suspected of being counterfeits. bulgarireplica.it was only one of them. Indeed, according to the panelist, the snapshots made by Archive.org confirmed the reality of the offer for the sale of copies of several creations of Bulgari (CRDD,  Bulgari SpA v. Gaetano Pierro , 18 maggio 2021).



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